The Complainant is Scanreco AB of Stockholm, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Robert Hodgins, RBVH Holdings of Orlando, Florida, United States of America (“United States”), internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2017. On June 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 28, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Response was filed with the Center on July 18, 2017.
The Center appointed John Swinson as the sole panelist in this matter on July 28, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is Scanreco AB, a leading original equipment manufacturer (“OEM”) and supplier of professional radio remote control systems. The Complainant has been developing and supplying radio remote control systems to international crane and machinery manufacturers since the 1980s. The Complainant’s global business is supported by an international network of subsidiary companies and distributors.
The Complainant owns numerous registered trade marks, including Taiwanese registered trade mark number 01351900 and United States registered trade mark number 4182617 for SCANRECO (the “Trade Mark”) which were registered on March 1, 2009 and July 31, 2012 respectively.
The Complainant owns a domain name which incorporates the Trade Mark, being , at which it promotes its products and design services (the “Complainant’s Website”). The domain name for the Complainant’s Website was registered on May 9, 2001.
The Respondent is Robert Hodgins, RBVH Holdings of the United States and the registered owner of the Disputed Domain Name, which was registered on March 28, 2011.
According to the Complainant, the website associated with the Disputed Domain Name used to feature the Complainant’s Trade Mark a number of times and offered new batteries, parts and service repair in relation to Scanreco batteries. The website also referred to companies which may use the Complainant’s products by way of links to other websites seemingly owned and operated by the Respondent.
The Complainant sent a cease and desist letter to the Respondent concerning the Disputed Domain Name on May 8, 2017.
Following receipt of the cease and desist letter, the Respondent moved the content of his website to the domain name . At the time of this decision, the Disputed Domain Name points to a “parked” website comprising pay-per-click (“PPC”) links relating to batteries. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant has registered rights in the Trade Mark. The Disputed Domain Name is confusingly similar to the Trade Mark.
The addition of the generic Top-Level Domain (“gTLD”) “.com” and the generic term “batteries” in the Disputed Domain Name is irrelevant for the purposes of assessing confusing similarity. The relevant part of the Disputed Domain Name for assessing confusing similarity is “scanreco”, which is identical to the Trade Mark.
Rights or Legitimate Interests
The Complainant has the exclusive right to use the Trade Mark, including for advertising. The Respondent has no rights or legitimate interests in the Trade Mark or in the Disputed Domain Name.
The Respondent is not a licensee of the Complainant. The Complainant has not given the Respondent permission to use the Trade Mark in registering the Disputed Domain Name or to use the Disputed Domain Name in offering goods and services under the Trade Mark.
Further, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant has been using the Trade Mark in the domain name for the Complainant’s Website, “www.”, from as early as 2001. Therefore, the Complainant has been using the Trade Mark for at least 16 years prior to registration of the Disputed Domain Name.
At the time of registering the Disputed Domain Name, it is obvious that the Respondent was well aware of the Trade Mark and the Complainant’s business. Parts of the Complainant’s Website have been copied by the Respondent to create the website associated with the Disputed Domain Name which implies knowledge of the Trade Mark and the Complainant’s business. The Respondent sought to commercially profit from misleading consumers searching for information about the Complainant’s business.
Further, links at the bottom of the home page of the website associated with the Disputed Domain Name refer to competitors of the Complainant. It also draws consumers’ attention to the Complainant’s competitors which causes a loss of profit for the Complainant. This stipulates bad faith use.
The disclaimer at the bottom of the page is not enough to dispel confusion caused by the fact that the Respondent offers services and goods as though the Respondent is actually the Complainant. This is further demonstrated by the use of the Trade Mark in various places on the website at the Disputed Domain Name.
The Complainant sent a cease and desist letter to the Respondent on May 8, 2017. Although the Respondent did not reply, by May 25, 2017, the Respondent had transferred the content of its website to a different domain name. This further demonstrates that the Disputed Domain Name was being used in bad faith. B. Respondent
The Respondent’s contentions are as follows.
Identical or Confusingly Similar
The Response does not address whether the Trade Mark is identical or confusingly similar to the Disputed Domain Name.
Rights or Legitimate Interests
For at least five years, the Complainant has known that the Respondent is using the Disputed Domain Name and the website associated with it in order to service the Complainant’s products. In that time, the Complainant has not made any request to the Respondent to stop or change its use of the Disputed Domain Name. The Respondent has made every effort not to infringe on the rights of the Complainant.
The Respondent has signed a distributor agreement provided by the Complainant, however, it has not been “approved” by the Complainant.
Registered and Used in Bad Faith
The Respondent did not intend to register and use the Disputed Domain Name in bad faith or to infringe the Trade Mark.
The marketing of the website at the Disputed Domain Name does not constitute misleading marketing or undue advantage of reputation. The website associated with the Disputed Domain Name is used to offer repair services for Scanreco batteries to customers who purchased Scanreco batteries from the Respondent. Scanreco parts and services are hard to find in the United States.
There are numerous statements on the website associated with the Disputed Domain Name that seek to distinguish the Respondent, trading as Roberts Diesel Works, Inc., from the Complainant and their respective goods and services. These include “Scanreco Radio Remote Control … Brought to you by Roberts Diesel Works Inc.” and “The RDWI, Inc. mark are the logos, trademarks, and service marks of RDWI. ALL other trademarks, service marks and logos used in this site are the trademarks, service marks or logos of their respective owners. RDWI is in no way associated with them other than the fact we sell their products and or parts.” 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark has been wholly incorporated into the Disputed Domain Name and is combined with the descriptive term “batteries”. It is well established that the addition of a descriptive term does not prevent a finding of confusing similarity. In these circumstances, the Panel considers that the addition contributes to confusing similarity, as the term “batteries” can be easily associated with the Complainant’s products.
In this case the gTLD “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored.
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons.
The Panel accepts the Complainant’s submission that the Respondent is not a licensee or authorised distributor of the Complainant and that the Complainant has not otherwise permitted the Respondent to use the Disputed Domain Name. The distributor agreement referred to in the Response does not appear to be in force as it has not been countersigned by the Complainant.
The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Before the Respondent changed its use of the Disputed Domain Name, the Disputed Domain Name resolved to a website that offered the Complainant’s products for sale and repair services for the Complainant’s products (using the Trade Mark). This is clearly for commercial gain.
In certain circumstances, a third party may legitimately sell a trade mark owner’s products or offer services relating to a trade mark owner’s products using a domain name which incorporates the relevant trade mark without the trade mark owner’s permission (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”)). The panel in Oki Data stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the respondent’s use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately and prominently disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
The Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481).
Based on the evidence before the Panel, the Respondent’s use of the Disputed Domain Name both previously and at the time of this decision does not satisfy the elements of the Oki Data test. The website at the Disputed Domain Name previously contained links to third party websites which offered goods and services other than those relating to “SCANRECO” (such as spare parts relating to “PRENTICE”, “FASSI” and “PALFINGER”). While the Panel considers that the statements at the footer of the website meets the third element regarding disclosure of the Respondent’s relationship with the Complainant, all elements of the Oki Data test are required to be satisfied for the Respondent’s offering of goods and services to be deemed bona fide.
At present, the Disputed Domain Name resolves to a PPC website. Previous panels have found that PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue (see section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
If the distributor agreement were in force, the Respondent is prohibited by that agreement from using, seeking to register or having registered any name or trade mark that is similar to any name or trade mark or controlled by the Complainant. As such, the Respondent would be in breach of the distributor agreement by registering and using the Disputed Domain Name which incorporates the Trade Mark.
There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
According to the Response, the Complainant has known about the Respondent’s use of the Disputed Domain Name for over five years. As such, the Respondent has raised the issue of the Complainant’s delay in bringing the Complaint. UDRP panels have widely recognised that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
For the reasons set out above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Based on the evidence provided by the Complainant and the Response, it is clear that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. While the Panel does not believe the Respondent’s conduct was aimed at intentionally attempting to disrupt the Complainant’s business activities, it remains that the Respondent has registered and is using the Disputed Domain Name, which incorporates the Trade Mark, without permission from the Complainant.
In the circumstances, the Panel finds that the Respondent sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. The Panel reasonably considers that the likely effect of the Respondent’s registration and previous use of the Disputed Domain Name was to attract Internet users to its website for commercial gain (see paragraph 4(b)(iv) of the Policy). Although the Respondent is not regarded as having done so maliciously, the Panel considers this to be bad faith registration and use.
The Respondent’s bad faith registration and use is further demonstrated by the fact that the Respondent has transferred the content of its website that was previously at the Disputed Domain Name to another domain name, , which does not incorporate the Trade Mark. The Respondent could have used this domain name at first instance but did not do so. This is further evidence that the Respondent registered the Disputed Domain Name to trade off the Trade Mark.
Currently, the Disputed Domain Name resolves to a PPC website featuring sponsored advertising relating to batteries and leads to listings for products other than the Complainant’s. This is further evidence of bad faith use.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: August 9, 2017
Full & Egal Universal Law Academy